F-IV - claims

Question 1

1. General

Answer 1

The application must contain “one or more claims”.

Art. 78(1)(c)

These must:

(i)
“define the matter for which protection is sought”;

(ii)
“be clear and concise”; and

(iii)
“be supported by the description”.

Art. 84

Since the extent of the protection conferred by a European patent or application is determined by the claims (interpreted with the help of the description and the drawings), clarity of the claims is of the utmost importance (see also F‑IV, 4).

Question 2

2. Form and content of claims

Question 3

2.1 Technical features

Answer 3

The claims must be drafted in terms of the “technical features of the invention”. This means that claims must not contain any statements relating, for example, to commercial advantages or other matters not related to “carrying out” the invention, but statements of purpose are allowed if they assist in defining the invention.

It is not necessary that every feature is expressed in terms of a structural limitation. Functional features may be included provided that a skilled person would have no difficulty in providing some means of performing this function without exercising inventive skill (see F‑IV, 6.5). For the specific case of a functional definition of a pathological condition, see F‑IV, 4.21.

Claims to the use of the invention, in the sense of the technical application thereof, are allowable.

Question 4

2.2 Two-part form

Answer 4

Rule 43(1)(a) and (b) define the two-part form which a claim must have “wherever appropriate”.

The first part or “preamble” needs to contain a statement indicating “the designation of the subject-matter of the invention”, i.e. the general technical class of apparatus, process, etc. to which the invention relates, followed by a statement of “those technical features which are necessary for the definition of the claimed subject-matter but which, in combination, are part of the prior art”. This requirement to state prior-art features in the first part of the claim is applicable only to independent claims and not to dependent claims (see F‑IV, 3.4). It is clear from the wording of Rule 43 that it is necessary only to refer to those prior-art features which are relevant to the invention. For example, if the invention relates to a photographic camera but the inventive step relates entirely to the shutter, it would be sufficient for the first part of the claim to read: “A photographic camera including a focal plane shutter” and there is no need to refer also to the other known features of a camera such as the lens and view-finder.

The second part or “characterising portion” needs to state the features which the invention adds to the prior art, i.e. the technical features for which, in combination with the features stated in the first part, protection is sought.

If a single document in the state of the art according to Art. 54(2), e.g. cited in the search report, reveals that one or more features in the second part of the claim were already known in combination with all the features in the first part of the claim and in that combination have the same effect as they have in the full combination according to the invention, the division will require that such feature or features be transferred to the first part.

Where, however, a claim relates to a novel combination, and where the division of the features of the claim between the preamble and the characterising part could be made in more than one way without inaccuracy, applicants must not be pressed, unless there are very substantial reasons, to adopt a different division of the features from that which they have chosen, if their version is not incorrect. If the applicant insists on including more features in the preamble than can be derived from the closest available prior art, this is accepted.

If no other prior art is available, this first part of the claim could be used to raise an objection on the ground of lack of inventive step (see G‑VII, 5.1, last paragraph).

Question 5

2.3 Two-part form unsuitable

Answer 5

Subject to what is stated in F‑IV, 2.3.2, final sentence, applicants are required to follow the above two-part formulation in their independent claim or claims, where, for example, it is clear that their invention resides in a distinct improvement in an old combination of parts or steps. However, as is indicated by Rule 43, this form need be used only in appropriate cases. The nature of the invention may be such that this form of claim is unsuitable, e.g. because it would give a distorted or misleading picture of the invention or the prior art. Examples of the kind of invention which may require a different presentation are:

(i)
the combination of known integers of equal status, the inventive step lying solely in the combination;

(ii)
the modification of, as distinct from addition to, a known chemical process e.g. by omitting one substance or substituting one substance for another; and

(iii)
a complex system of functionally interrelated parts, the inventive step concerning changes in several of these or in their interrelationships.

In examples (i) and (ii), the Rule 43 form of claim may be artificial and inappropriate, whilst in example (iii) it might lead to an inordinately lengthy and involved claim. Another example in which the Rule 43 form of claim may be inappropriate is where the invention is a new chemical compound or group of compounds. It is likely also that other cases will arise in which the applicant is able to adduce convincing reasons for formulating the claim in a different form.

Question 6

2.3.1 No two-part form

Answer 6

There is a special instance in which the Rule 43 form of claim is avoided. This is when the only relevant prior art is another European patent application falling within the terms of Art. 54(3). Such prior art must however be clearly acknowledged in the description (see F‑II, 4.3, penultimate paragraph, and F‑II, 4.4).

Question 7

2.3.2 Two-part form “wherever appropriate”

Answer 7

When examining whether or not a claim is to be put in the form provided for in Rule 43(1), second sentence, it is important to assess whether this form is “appropriate”. In this respect the purpose of the two-part form is to allow the skilled person to see clearly which features necessary for the definition of the claimed subject-matter are, in combination, part of the prior art. If this is sufficiently clear from the indication of prior art made in the description, to meet the requirement of Rule 42(1)(b), the two-part form is not insisted upon.

Question 8

2.4 Formulae and tables

Answer 8

The claims, as well as the description, may contain chemical or mathematical formulae but not drawings (see the decision of the President dated 25 November 2022, OJ EPO 2022, A113, Art. 2(8)). The claims may contain tables but “only if their subject-matter makes the use of tables desirable”. In view of the use of the word “desirable” in this decision, the division does not object to the use of tables in claims where this form is convenient.

Question 9

3. Kinds of claim

Question 10

3.1 Categories

Answer 10

The EPC refers to different “categories” of claim (“products, process, apparatus or use”). For many inventions, claims in more than one category are needed for full protection. In fact, there are only two basic kinds of claim, viz. claims to a physical entity (product, apparatus) and claims to an activity (process, use). The first basic kind of claim (“product claim”) includes a substance or compositions (e.g. chemical compound or a mixture of compounds) as well as any physical entity (e.g. object, article, apparatus, machine, or system of co-operating apparatus) which is produced by a person’s technical skill. Examples are: “a steering mechanism incorporating an automatic feed-back circuit …”; “a woven garment comprising …”; “an insecticide consisting of X, Y, Z”; or “a communication system comprising a plurality of transmitting and receiving stations”. The second basic kind of claim (“process claim”) is applicable to all kinds of activities in which the use of some material product for effecting the process is implied; the activity may be exercised upon material products, upon energy, upon other processes (as in control processes) or upon living things (see, however, G‑II, 4.2 and G‑II, 5.4).

Rule 43(2) in combination with Rule 44(1) should be construed as permitting the inclusion of any one of the following combinations of claims of different categories in the same application:

(i)
in addition to an independent claim for a given product, an independent claim for a process specially adapted for the manufacture of said product and an independent claim for a use of said product; or

(ii)
in addition to an independent claim for a given process, an independent claim for an apparatus or means specifically designed for carrying out said process; or

(iii)
in addition to an independent claim for a given product, an independent claim for a process specially adapted for the manufacture of said product and an independent claim for an apparatus or means specifically designed for carrying out said process.

Rule 43(2)

However, while a single set of independent claims according to any one of the combinations (i), (ii) or (iii) above is always permissible, a plurality of such sets of independent claims in one European patent application can only be allowed if the specific circumstances defined in Rule 43(2)(a) to Rule 43(2)(c) apply and the requirements of Art. 82 and Art. 84 are met. The proliferation of independent claims arising out of a combined effect of this kind may therefore be allowed only by way of an exception.

Art. 82

If the subject-matter of a European patent is a process, the protection conferred by the patent extends to the products directly obtained by such a process.

Question 11

3.2 Number of independent claims

Answer 11

According to Rule 43(2), as applicable to all European patent applications, the number of independent claims is limited to one independent claim in each category.

Exceptions from this rule can only be admitted in the specific circumstances defined in sub-paragraphs (a), (b) or (c) of this rule, provided the requirement of Art. 82 with regard to unity is met (see F‑V).

The following are examples of typical situations falling within the scope of the exceptions from the principle of one independent claim per category:

(i)
Examples of a plurality of interrelated products (Rule 43(2)(a))

–
plug and socket

–
transmitter – receiver

–
intermediate(s) and final chemical product

–
gene – gene construct – host – protein – medicament

For the purpose of Rule 43(2)(a), the term “interrelated” is interpreted to mean “different objects that complement each other or work together”. In addition, Rule 43(2)(a) can be interpreted as covering apparatus claims, since the term “products” is considered to include apparatuses. Likewise, it may include systems, sub-systems and sub-units of such systems, as long as these entities are interrelated. Interrelated methods claims may also fall under the exception of Rule 43(2)(a).

(ii)
Examples of a plurality of different inventive uses of a product or apparatus (Rule 43(2)(b))

–
claims directed to further medical uses when a first medical use is known (see G‑II, 4.2)

–
claims directed to the use of compound X for multiple purposes, e.g. for cosmetically fortifying hair and for promoting hair growth

(iii)
Examples of alternative solutions to a particular problem (Rule 43(2)(c))

–
a group of chemical compounds

–
two or more processes for the manufacture of such compounds

(iv)
Examples of allowable claim types

–
Claims directed to multiple methods involving a novel and inventive polypeptide P, e.g. an enzyme that controls a specific step in the synthesis of a compound:

a method for manufacturing the polypeptide P,

a method for manufacturing the compound by using either the isolated polypeptide or host cells expressing said polypeptide,

a method for selecting a host cell based on whether or not it expresses the polypeptide of the invention.

–
A data sending method for sending a data packet between a plurality of devices coupled to a bus;

a data receiving method for receiving a data packet between a plurality of devices coupled to a bus.

–
Methods of operating a data-processing system comprising steps A, B, … – a data-processing apparatus/‌system comprising means for carrying out said method – a computer program [product] adapted to perform said method – a computer-readable storage medium/data carrier comprising said program;

Note however that when several independent claims are directed to equivalent embodiments that are not sufficiently different (e.g. computer program adapted to perform said method, optionally carried on an electric carrier signal – computer program comprising software code adapted to perform method steps A, B …), the exceptions under Rule 43(2) usually do not apply.

For the purpose of Rule 43(2)(c), the term “alternative solutions” can be interpreted as “different or mutually exclusive possibilities”. Moreover, if it is possible to cover alternative solutions by a single claim, the applicant should do so. For example, overlaps and similarities in the features of the independent claims of the same category are an indication that it would be appropriate to replace such claims with a single independent claim, e.g. by selecting a common wording for the essential features (see F‑IV, 4.5).

Question 12

3.3 Objection under Rule 43(2) or Rule 137(5)

Answer 12

Where an unjustified plurality of independent claims in the same category persists after the search (see B‑VIII, 4.1 and B‑VIII, 4.2) in the application under examination, an objection is raised under Rule 43(2). If no Rule 62a(1) invitation was sent at the search stage, the examining division can still raise an objection under Rule 43(2). If the application is a Euro-PCT application not subject to the preparation of a supplementary European search report (see B‑II, 4.3.1), an objection under Rule 43(2) may also arise in examination.

When an objection under Rule 43(2) arises, the applicant is invited to amend the claims appropriately. If the search was restricted in accordance with Rule 62a, and the examining division upholds the objection under Rule 43(2) despite possible counter-arguments provided by the applicant in response to the invitation under Rule 62a(1) (see B‑VIII, 4.2.2) or to the search opinion under Rule 70a (see B‑X, 8), the claims must be amended in such a way as to result in the removal of all subject-matter excluded from the search (Rule 62a(2)) and the description amended accordingly (see H‑II, 5).

If in reply to the reasoned objection (raised or confirmed in a communication from the examining division) the additional independent claims are maintained and no convincing arguments are presented that one of the situations referred to in sub-paragraphs (a) to (c) of Rule 43(2) applies, the application may be refused under Art. 97(2).

If the application is amended to provide a set of claims complying with Rule 43(2), but containing one or more claims directed to subject-matter excluded from the search in accordance with Rule 62a(1), an objection under Rule 137(5) arises and such amendments may not be admitted (see also H‑IV, 4 and H‑IV, 4.1.1). However, before such a decision can be taken, it will be necessary to allow the applicant to comment according to Art. 113(1) on the underlying issue of whether or not the claims in respect of which the invitation under Rule 62a(1) was sent did in fact comply with Rule 43(2).

The burden of proof concerning an objection under Rule 43(2) is initially shifted onto the applicant, i.e. it is up to the applicant to argue convincingly why additional independent claims can be maintained. For example, the mere statement that the number of claims is the minimum necessary to provide the overall scope of protection which the applicant seeks is not a convincing argument (see T 56/01, Reasons 5).

Where the application also lacks unity of invention, the division may raise an objection under either Rule 43(2) or Art. 82 or under both. The applicant cannot contest which of these objections has priority.

Question 13

3.4 Independent and dependent claims

Answer 13

All applications will contain one or more “independent” claims directed to the essential features of the invention. Any such claim may be followed by one or more claims concerning “particular embodiments” of that invention. It is evident that any claim relating to a particular embodiment must effectively include also the essential features of the invention, and hence must include all the features of at least one independent claim. The term “particular embodiment” is construed broadly as meaning any more specific disclosure of the invention than that set out in the independent claim or claims.

Rule 43(3) and
(4)

Any claim which includes all the features of any other claim is termed a “dependent claim”. Such a claim must contain, if possible at the beginning, a reference to the other claim, all features of which it includes (see, however, F‑IV, 3.8 for claims in different categories). Since a dependent claim does not by itself define all the characterising features of the subject-matter which it claims, expressions such as “characterised in that” or “characterised by” are not necessary in such a claim but are nevertheless permissible. A claim defining further particulars of an invention may include all the features of another dependent claim by referring back to that claim. Also, in some cases, a dependent claim may define a particular feature or features which may appropriately be added to more than one previous claim (independent or dependent). It follows that there are several possibilities: a dependent claim may refer back to one or more independent claims, to one or more dependent claims, or to both independent and dependent claims.

It sometimes occurs that an independent claim refers explicitly to alternative solutions and that these alternatives are also claimed separately in dependent claims. Such claims may seem redundant, but may be important for applicants in some national procedures if they wish to restrict their claims.

Rule 43(4)

The division objects to such claims only if they detract from the clarity of the claims as a whole.

A dependent claim referring explicitly to independent claims in two categories as alternatives cannot be objected to on this ground alone. For example, if the invention relates to both a composition and a use of that composition, it is possible for a claim specifying further features of the composition to be made dependent on both the independent claim for the composition and the independent claim for its use.

Art. 84

Objections are, however, raised to this type of claim dependency if it leads to a lack of clarity.

Question 14

3.5 Arrangement of claims

Answer 14

All dependent claims referring back to a single previous claim and those referring back to several previous claims must be grouped together to the extent and in the most appropriate way possible. The arrangement must therefore be one which enables the association of related claims to be readily determined and their meaning in association to be readily construed. The division objects if the arrangement of claims is such as to create obscurity in the definition of the subject-matter to be protected. In general, however, when the corresponding independent claim is allowable, the division does not concern itself unduly with the subject-matter of dependent claims, provided it is satisfied that they are truly dependent and thus in no way extend the scope of protection of the invention defined in the corresponding independent claim (see also F‑IV, 3.8).

Question 15

3.6 Subject-matter of a dependent claim

Answer 15

If the two-part form is used for the independent claim(s), dependent claims may relate to further details of features not only of the characterising portion but also of the preamble.

Question 16

3.7 Alternatives in a claim

Answer 16

A claim, whether independent or dependent, may refer to alternatives, provided that the number and presentation of alternatives in a single claim does not make the claim obscure or difficult to construe and provided that the claim meets the requirements of unity (see also F‑V, 3.2.1 and 3.2). In the case of a claim defining (chemical or non-chemical) alternatives, i.e. a so-called “Markush grouping”, unity of invention is considered to be present if the alternatives are of a similar nature and can fairly be substituted for one another (see F‑V, 3.2.5).

Question 17

3.8 Independent claims containing a reference to another claim or to features from a claim of another category

Answer 17

A claim containing a reference to another claim is not necessarily a dependent claim as defined in Rule 43(4). One example of this is a claim referring to a claim of a different category (e.g. “Apparatus for carrying out the process of claim 1 …”, or “Process for the manufacture of the product of claim 1 …”). Similarly, in a situation like the plug and socket example of F‑IV, 3.2(i), a claim to the one part referring to the other co-operating part (e.g. “plug for co-operation with the socket of claim 1 …”) is not a dependent claim. In all these examples, the division carefully considers the extent to which the claim containing the reference necessarily involves the features of the claim referred to and the extent to which it does not. Indeed, objections on the grounds of lack of clarity and failure to state the technical features (Rule 43(1)) apply to a claim which simply says “Apparatus for carrying out the process of claim 1”. Since the change of category already makes the claim independent, the applicant is required to set out clearly in the claim the essential features of the apparatus.

The same is true for a claim which says “Method for using an apparatus according to claim 1”. The method claim, formulated as a use claim, lacks the steps that are carried out in order to use the apparatus (see F‑IV, 4.16) and is therefore not clear.

For claims directed to computer-implemented inventions, in which independent claims often comprise references to other independent claims, see F‑IV, 3.9.

The subject-matter of a claim in one category may also to some extent be defined in terms of features from another category; therefore an apparatus may be defined in terms of functions it is able to perform, provided the structure is made sufficiently clear; or a process may be defined in terms of essential structural features of the apparatus for carrying it out; or an element of an apparatus may be defined in terms of how it is made. However, in the wording of these claims and in the assessment of the claimed subject-matter, a clear distinction must be maintained between product claims (for a device, apparatus or system) and process claims (for a process, activity or use). For example, a claim for an apparatus cannot normally be limited only by the manner in which the apparatus is used; for this reason, a claim which simply reads “Apparatus Z, when used for carrying out process Y” is also objected to on the grounds of lack of clarity and failure to state the technical features (Rule 43(1)).

No separate examination for the novelty and inventive step of a process claim for producing a product is necessary, provided that:

–
all features of the product as defined in the product claim inevitably (see also G‑VII, 14) result from the claimed process (see F‑IV, 4.5 and T 169/88), and

–
the product claim is patentable.

This also applies in the case of a claim for the use of a product, when the product is patentable and is used with its features as claimed (see T 642/94). In all other instances, the patentability of the claim referred to does not necessarily imply the patentability of the independent claim containing the reference. If the process, product and/or use claims have different effective dates (see F‑VI, 1 and 2), a separate examination may still be necessary in view of intermediate documents (see also G‑VII, 14).

Question 18

3.9 Claims directed to computer-implemented inventions

Answer 18

The expression “computer-implemented inventions” (CII) covers claims which involve computers, computer networks or other programmable apparatus, whereby at least one feature is realised by means of a program.

Claims directed to CII should define all the features which are essential for the technical effect of the process which the computer program is intended to carry out when it is run (see F‑IV, 4.5.2, last sentence). An objection under Art. 84 may arise if the claims contain program listings. Short excerpts from programs may be accepted in the description (see F‑II, 4.12).

In the following three sections, a distinction is made between three situations. The practice defined in F‑IV, 3.9.1 is confined to inventions in which all the method steps can be carried out by generic data processing means. F‑IV, 3.9.2, on the other hand, relates to inventions in which at least one method step defines the use of specific data processing means or other technical devices. Inventions that are realised in a distributed computing environment are discussed in F‑IV, 3.9.3.

Question 19

3.9.1 Cases where all method steps can be fully implemented by generic data processing means

Answer 19

A common type of CII relates to subject-matter where all the method steps can fully be carried out by computer program instructions running on means which, in the context of the invention, provide generic data processing functions. Such means can, for example, be embedded in a personal computer, smartphone, printer etc. In such inventions, although different claim structures are possible, the set of claims usually starts with a method claim. Further claims in other categories with subject-matter corresponding to that of the method may be included to obtain complete protection of the invention. If the invention concerns software which can be loaded into memory, transmitted over a network or distributed on a data carrier, a claim to a computer program [product] may also be present in addition to a computer-implemented method. The category of a computer program [product] claim is distinguished from that of a corresponding computer-implemented method (T 424/03 and G 3/08). The following non-exhaustive list comprises examples of acceptable claim formulations (T 410/96, T 1173/97 and T 2140/08) in such a set of claims:

(i)
Method claim (claim 1)

–
A computer-implemented method comprising steps A, B, …

–
A method carried out by a computer comprising steps A, B, …

(ii)
Apparatus/device/system claim (claim 2)

–
A data processing apparatus/device/system comprising means for carrying out [the steps of] the method of claim 1.

–
A data processing apparatus/device/system comprising means for carrying out step A, means for carrying out step B, …

–
A data processing apparatus/device/system comprising a processor adapted to/configured to perform [the steps of] the method of claim 1.

(iii)
Computer program [product] claim (claim 3)

–
A computer program [product] comprising instructions which, when the program is executed by a computer, cause the computer to carry out [the steps of] the method of claim 1.

–
A computer program [product] comprising instructions which, when the program is executed by a computer, cause the computer to carry out steps A, B, ….

(iv)
Computer-readable [storage] medium/data carrier claim (claim 4)

–
A computer-readable [storage] medium comprising instructions which, when executed by a computer, cause the computer to carry out [the steps of] the method of claim 1.

–
A computer-readable [storage] medium comprising instructions which, when executed by a computer, cause the computer to carry out steps A, B, …

–
A computer-readable data carrier having stored thereon the computer program [product] of claim 3.

–
A data carrier signal carrying the computer program [product] of claim 3.

In formulation (ii) above, apparatus features of the means-plus-function type (“means for …”) are interpreted as means adapted to carry out the respective steps/functions, rather than merely means suitable for carrying them out (T 410/96). There is no particular preference of wording among “comprising means for”, “adapted to”, “configured to” or equivalents. In this way, novelty is conferred over an unprogrammed data processing apparatus or a data processing apparatus programmed to perform a different function.

An objection under Rule 43(2) is not raised if the claim set comprises one claim from each of the above formulations (i)-(iv). In these cases, an invitation under Rule 62a(1) is therefore not sent at the search stage since the requirements of Rule 43(2) are fulfilled.

However, an objection under Rule 43(2) may be raised if more than one claim is present from a heading (i)-(iv), for example if there are two or more computer program [product] claims which cannot be considered as falling under one of the exceptions of Rule 43(2) (F‑IV, 3.2).

When assessing the novelty and inventive step of a set of claims as defined above (formulations (i)-(iv)), the division usually starts with the method claim. If the subject-matter of the method claim is considered novel and inventive, the subject-matter of the other claims in a set formulated in accordance with the headings above will normally be novel and inventive as well, provided they comprise the features corresponding to all those which assure the patentability of the method.

Claims related to CII which are formulated differently to those in the formulations (i)-(iv) defined above are assessed on a case-by-case basis in view of the requirements of clarity, novelty and inventive step (see also F‑IV, 3.9.2).

For example, when the invention is realised in a distributed computing environment or involves interrelated products, it may be necessary to refer to the specific features of the different entities and to define how they interact to ensure the presence of all essential features, rather than making a mere reference to another claim as in the above formulations (ii)-(iv). In such cases, further independent claims to interrelated products and their corresponding methods may also be allowable under Rule 43(2)(a) (F‑IV, 3.2 and F‑IV, 3.9.3).

Similarly, if user interaction is required, an objection under Art. 84 may arise if it is not possible to determine from the claim which steps are carried out by the user.

Furthermore, a claim to a computer-implemented data structure in addition to formulations (i)-(iv) may be allowable under Rule 43(2) if it is defined by its own technical features, e.g. by a well-defined structure as in T 858/02, possibly with references to the corresponding method or system in which it is used. However, a computer-implemented data structure does not necessarily comprise features of the process by which it is generated. It is not necessarily restricted by a method in which it is used, either. Therefore, a claim to a computer-implemented data structure usually cannot be defined merely by reference to a method or as an outcome of a process. For further information on data structures, see G‑II, 3.6.3.

For the assessment of inventive step for claims comprising features related to exclusions under Art. 52(2), as is often the case with CII, see G‑VII, 5.4.

Question 20

3.9.2 Cases where method steps define additional devices and/or specific data processing means

Answer 20

Where a method claim includes steps defined as being carried out by devices other than generic data processing means, a corresponding device and/or computer program claim may need more than a mere reference to the method claim as in formulations (i)-(iv) in F‑IV, 3.9.1 to fulfil the requirements of Art. 84 (see also F‑IV, 3.8). Furthermore, if not all the features of the method claim are reflected in claims in other categories referring to the method, said claims in other categories have to be construed and examined separately with respect to novelty and inventive step.

In particular in applied fields such as medical devices, measuring, optics, electro-mechanics or industrial production processes, method claims frequently involve steps of manipulating or interacting with technical physical entities by using computer control. These method steps may not always be fully performed by the computer and the method claim may recite specific technical means for carrying out some of the steps. In such a case, defining a computer program claim as in F‑IV, 3.9.1(iii) will normally lead to an objection under Art. 84 if the step carried out by the specific technical means cannot be carried out by a generic data processing means (see Example 1 below). An objection under Art. 84 may also arise if the claims do not define which steps are carried out by the data processor or by the additional devices involved, as well as their interactions. The same applies if specific data processing means (e.g. a particular parallel computer architecture) are required as opposed to the generic data processing means described in F‑IV, 3.9.1.

On the other hand, if the method claim defines the further processing, by generic computational means, of data received from specific technical means, such as sensors, it is not necessary that the computer or computer program claims referring to the method comprise those specific technical means. In this case the specific technical means recited in the method are not required for carrying out the method steps and formulations as in F‑IV, 3.9.1 may be appropriate (see Example 2 below).

Finally, as is the case for any essential feature, if the specific technical means are essential for defining the invention, they have to be present in all the independent claims. Whether or not a feature is essential is decided according to the principles defined in F‑IV, 4.5 and subsections, taking due account of implicit features (F‑IV, 4.5.4).

Example 1

1. A method of determining oxygen saturation in blood in a pulse oximeter, comprising:

–
receiving in an electromagnetic detector first and second electromagnetic radiation signals from a blood-perfused tissue portion corresponding to two different wavelengths of light;

–
normalising said electromagnetic signals according to steps A, B and C to provide normalised electromagnetic signals;

–
determining oxygen saturation based on said normalised electromagnetic signals according to steps D and E.

2. A pulse oximeter having an electromagnetic detector and means adapted to execute the steps of the method of claim 1.
3. A computer program [product] comprising instructions to cause the device of claim 2 to execute the steps of the method of claim 1.
4. A computer-readable medium having stored thereon the computer program of claim 3.

Remarks: In this example, the method claim comprises a step which is defined as being executed by specific technical means (the electromagnetic detector in a pulse oximeter). A computer program claim making reference only to the method would lack clarity because such a program could not be executed e.g. on a general-purpose computer which does not have a pulse oximeter with an electromagnetic detector. Therefore, the computer program claim should be defined as being executed on the pulse oximeter with an electromagnetic detector (by referring to the device of claim 2) rather than only referring to the method claim 1.

Example 2

1. A computer-implemented method of determining oxygen saturation in blood, comprising:

–
receiving data representing first and second electromagnetic radiation signals acquired by an electromagnetic detector from a blood-perfused tissue portion corresponding to two different wavelengths of light;

–
normalising the data representing said electromagnetic signals according to steps A, B and C to provide normalised data;

–
determining oxygen saturation based on said normalised data according to steps D and E.

2. A data processing apparatus comprising means for carrying out the method of claim 1.
3. A computer program [product] comprising instructions which, when the program is executed by a computer, cause the computer to carry out the method of claim 1.
4. A computer-readable medium having stored thereon the computer program [product] of claim 3.

Remarks: In this example the invention lies in the further processing of acquired data for determining the oxygen saturation in blood. The data can be received for example from a data file storing data previously acquired by the electromagnetic detector. Such a method can therefore be carried out by generic data processing means, for example in the form of a desktop computer. It does not specify the electromagnetic detector as a required feature for receiving the input data. Hence, the device claim defined by reference to the method claim does not need to include the pulse oximeter or an electromagnetic detector either. Furthermore, the computer program claim can be executed on a general-purpose computer and not on a specific device in contrast to the case in Example 1. As a result, the formulations as in F‑IV, 3.9.1 are appropriate for claims 2-4 of Example 2.

Question 21

3.9.3 Cases where the invention is realised in a distributed computing environment

Answer 21

Another common type of CII is realised in a distributed computing environment. Examples are a networked client (e.g. a smartphone) and server system, accessing storage or processing resources of a computer cloud, devices in a peer-to-peer network performing file sharing, an augmented reality environment with head mounted displays, autonomous vehicles interacting over an ad hoc network or maintaining a distributed ledger using a blockchain.

For such distributed CIIs, the claim set may comprise claims directed to each entity of the distributed system and/or to the overall system and the corresponding methods. Such a claim set may be allowable under Rule 43(2)(a) (F‑IV, 3.2). Each independent claim must nevertheless fulfil the requirements for patentability, in particular the requirements of Art. 54, Art. 56 and Art. 84. For example, if the invention lies in the implementation of a computer cloud using virtual machines enabling adaptation to workload changes by allocating resources in an automatic manner, a client device accessing the resources of the cloud may already be known in the art. The claim set must also fulfil the requirements of unity.

It may be necessary to refer to the specific features of the different entities and to define how they interact to ensure the presence of all essential features. When referring to the interaction between the different entities, particular care must be taken that the claim is clear. In some situations, it may be necessary to limit the claim to the combination of the entities (see F‑IV, 4.14). If the distribution of the steps of a method across the involved entities is essential to the invention, it will be necessary to define which method step is carried out by which entity in order to fulfil the requirements of Art. 84. Otherwise, this may be left undefined in generic CII claims (see F‑IV, 3.9.1).

Some considerations relating to these requirements are illustrated with the help of the following examples. Other formulations (F‑IV, 3.9.1) than the ones given in the examples can also be part of the claim set but have been omitted for reasons of brevity.

Example

1. A transmitter device comprising means for encoding data by performing steps A and B and means to transmit the encoded data to a receiver device.
2. A receiver device comprising means for receiving encoded data from a transmitter device and means for decoding the data by performing steps C and D.
3. A system comprising a transmitter device according to claim 1 and a receiver device according to claim 2.
4. A computer program [product] comprising instructions which, when the program is executed by a first computer, cause the first computer to encode data by performing steps A and B and to transmit the encoded data to a second computer.
5. A computer program [product] comprising instructions which, when the program is executed by a second computer, cause the second computer to receive encoded data from a first computer and decode the received data by performing steps C and D.

Remarks: The problem addressed by the invention is the transmission of data over a network. The transmitter device encodes the data using an algorithm comprising steps A and B and the receiver device performs the complementary function of decoding the data using an algorithm comprising steps C and D. The requirements of Rule 43(2) are fulfilled since the devices of claims 1 and 2 are interrelated in that they interact to perform the invention and solve the stated problem. Novelty and inventive step have to be assessed for each independent claim individually. For example, if encoding according to steps A and B enables encoding to a known coding format in a more efficient way, and decoding according to steps C and D is conventional, it may be that only claims 1 and 3 are new and inventive.

Question 22

4. Clarity and interpretation of claims

Question 23

4.1 Clarity

Answer 23

The requirement that the claims must be clear applies to individual claims, i.e. to independent and dependent claims alike, and also to the claims as a whole. The clarity of the claims is of the utmost importance in view of their function in defining the matter for which protection is sought. Therefore, the meaning of the terms of a claim must, as far as possible, be clear for the person skilled in the art from the wording of the claim alone (see also F‑IV, 4.2). In view of the differences in the scope of protection which may be attached to the various categories of claims, the division must ensure that the wording of a claim leaves no doubt as to its category.

Where it is found that the claims lack clarity under Art. 84, this may have led to the issuing of a partial European or supplementary European search report under Rule 63 (see B‑VIII, 3.1 and 3.2). In such cases, in the absence of appropriate amendment and/or convincing arguments from the applicant as to why the invitation under Rule 63(1) was not justified, an objection under Rule 63(3) will also arise (see H‑II, 5).

Question 24

4.2 Interpretation

Answer 24

Each claim must be read giving the words the meaning and scope which they normally have in the relevant art, unless in particular cases the description gives the words a special meaning, by explicit definition or otherwise. Moreover, if such a special meaning applies, the division will, so far as possible, require the claim to be amended whereby the meaning is clear from the wording of the claim alone. This is important because it is only the claims of the European patent, not the description, which will be published in all the official languages of the EPO. The claim must also be read with an attempt to make technical sense out of it. Such a reading may involve a departure from the strict literal meaning of the wording of the claims. Art. 69 and its Protocol do not provide a basis for excluding what is literally covered by the terms of the claims (see T 223/05).

Question 25

4.3 Inconsistencies

Answer 25

Any inconsistency between the description and the claims must be avoided if it could throw doubt on the subject-matter for which protection is sought and therefore render the claim unclear or unsupported under Art. 84, second sentence, or, alternatively, render the claim objectionable under Art. 84, first sentence. Such inconsistency can be of the following kinds:

(i)
Simple verbal inconsistency

For example, there is a statement in the description which suggests that the invention is limited to a particular feature but the claims are not thus limited; also, the description places no particular emphasis on this feature and there is no reason for believing that the feature is essential for the performance of the invention. In such a case, the inconsistency can be removed either by broadening the description or by limiting the claims. Similarly, if the claims are more limited than the description, the claims may be broadened or the description may be limited. See also paragraph (iii) below.

(ii)
Inconsistency regarding apparently essential features

For example, it may appear, either from general technical knowledge or from what is stated or implied in the description, that a certain described technical feature not mentioned in an independent claim is essential to the performance of the invention, or, in other words, is necessary for the solution of the problem to which the invention relates. In such a case, the claim does not meet the requirements of Art. 84, because Art. 84, first sentence, when read in conjunction with Rule 43(1) and (3), has to be interpreted as meaning not only that an independent claim must be comprehensible from a technical point of view but also that it must clearly define the subject-matter of the invention, that is to say indicate all the essential features thereof (see T 32/82). If, in response to this objection, the applicants show convincingly, e.g. by means of additional documents or other evidence, that the feature is in fact not essential, they may be allowed to retain the unamended claim and, where necessary, to amend the description instead. The opposite situation in which an independent claim includes features which do not seem essential for the performance of the invention is not objectionable. This is a matter of the applicant’s choice. The division therefore does not suggest that a claim be broadened by the omission of apparently inessential features;

(iii)
Part of the description and/or drawings is inconsistent with the subject-matter for which protection is sought

According to Art. 84, second sentence, the claims must be supported by the description. This means that there must not be inconsistency between the claims and the description. Parts of the description that give the skilled person the impression that they disclose ways to carry out the invention but are not encompassed by the wording of the claims are inconsistent (or contradictory) with the claims. Such inconsistencies may be present in the application as originally filed or may result from amending the claims to such an extent that they are no longer consistent with the description or drawings.

For example, an inconsistency may exist due to the presence of an alternative feature which has a broader or different meaning than a feature of the independent claim. Further, an inconsistency arises if the embodiment comprises a feature which is demonstrably incompatible with an independent claim.

Examples:

–
the independent claim defines a feature as being made of “purely substance X”, whereas the description defines it as being made of a blend of substances “X and Y”;

–
the independent claim defines the feature of an article comprising nicotine-free liquid material, whereas the description states that the liquid material may contain nicotine.

However, it is not an inconsistency when an embodiment comprises further features which are not claimed as dependent claims as long as the combination of the features in the embodiment is encompassed by the subject-matter of an independent claim. Similarly, it is not an inconsistency when an embodiment fails to explicitly mention one or more features of an independent claim as long as they are present by reference to another embodiment or implicit.

Example: Where the claim comprises features A, B and C taken in combination, the passages dealing individually with how each of A, B and C are realised are normally understood as describing the refinements of the combination defined in the claim unless there are indications to the contrary. The passages which describe only the realisation of feature A, for example by introducing features A1-A3 and discussing their advantages, but which can be interpreted as meant for being combined with the other features of the claim, would not need an amendment caused by the limitation of the claim from B to B2 unless one of A1-A3 is incompatible with B2. On the other hand, any passage explicitly referring to a sub-combination of the claimed features (e.g. only A or A+B) as being the invention is inconsistent with the claim.

For borderline cases where there is doubt as to whether an embodiment is consistent with the claims, the benefit of the doubt is given to the applicant.

The applicant must remove any inconsistencies by amending the description either by deleting the inconsistent embodiments or marking appropriately so that it is clear that they do not fall within the subject-matter for which protection is sought. See paragraph (i) above for the case where an inconsistency can be removed by broadening the claims.

Example: Independent claim defines a vehicle with a broad feature of a “motor”, together with other features. The description and the drawings comprise Embodiment 1, in which the vehicle has an electric motor, and Embodiment 2, in which the vehicle has a combustion engine. During the prosecution, in order to fulfil the requirements of inventive step, the independent claim is amended to specify a vehicle employing an electric motor since the combination of claimed features using a combustion engine was anticipated by the prior art. Embodiment 2 is no longer consistent with the independent claim, unless it can be inferred from this embodiment that the combustion engine is used in combination with the electric motor. This inconsistency must be rectified either by removing Embodiment 2 from the description and drawings or by marking Embodiment 2 as not being covered by the claimed subject-matter (e.g. “Embodiment 2 is not covered by the subject-matter of the claims” or similar wording).

An inconsistency between the description and the claims cannot be removed by introducing at the beginning of the description a generic statement such as “embodiments not falling under the scope of the appended claims are to be considered merely as examples suitable for understanding the invention” without indicating which parts of the description are no longer covered. To remove the inconsistency, such a statement has to refer to specific embodiments (e.g. “Embodiments X and Y are not encompassed by the wording of the claims but are considered as useful for understanding the invention”).

The terms “disclosure”, “example”, “aspect” or similar, on their own, do not necessarily imply that what follows is not encompassed by an independent claim. Unambiguous expressions have to be adopted to mark an inconsistent embodiment (e.g. by adding “not encompassed by the wording of the claims”, “not according to the claimed invention” or “outside the subject-matter of the claims”) instead of merely replacing the terms “embodiment” or “invention” by one of the aforementioned terms.

As long as the resulting text of the description does not present conflicting information to the reader, an inconsistent embodiment may also be remedied by ensuring that it is not referred to as being “according to the invention” throughout the description and by complementing the reference to it with an explicit statement to the effect that it is retained due to being useful for understanding the invention (e.g. “embodiment useful for understanding the invention”, “comparative example from background art”.

Subject-matter in the description regarded as an exception to patentability under Art. 53 needs to be excised, reworded such that it does not fall under the exceptions to patentability or prominently marked as not being according to the claimed invention (see G‑II, 4.2 for adaptation of the description for methods of treatment of the human and animal body, G‑II, 5.3 for adaptation of the description for the use of human embryonic stem cells and G‑II, 5.4 for adaptation of the description for plant and animals).

Moreover, features required by the independent claims may not be described in the description as being optional using wording such as “preferably”, “may” or “optionally”. The description must be amended to remove such terms if they make a mandatory feature of an independent claim appear as being optional.

When inviting the applicant to amend the description, the division provides examples of embodiments inconsistent with the independent claims and brief reasons why. If the inconsistency concerns describing a mandatory feature of an independent claim as optional, the division provides an example passage.

See also H‑V, 2 for the allowability of amendments to the description.

An inconsistency between the description/drawings and the claims may frequently occur when, after a limitation of the claims following an invitation under Rule 62a(1) or Rule 63(1), the subject-matter excluded from the search is still present in the description. Unless the initial objection was not justified, such subject-matter is objected to under Art. 84 (inconsistency between the claims and the description).

Furthermore, an inconsistency between the description/drawings and the claims will occur when, after a non-unity objection (Rule 64 or Rule 164), the claims have been limited to only one of the originally claimed inventions: the embodiments and/or examples of the non-claimed inventions must be either deleted or clearly indicated as not being covered by the claims.

Question 26

4.4 General statements, “spirit of the invention”, claim-like clauses (not for paper A)

Answer 26

General statements in the description which imply that the extent of protection may be expanded in some vague and not precisely defined way are not allowed. In particular, any statement which refers to the extent of protection being expanded to cover the “spirit of the invention” or “all equivalents” of the claims must be deleted.

Statements that refer to the extent of protection covering the “scope of the claims” or the invention being “defined in the claims” are allowed. This does not preclude the removal of inconsistencies (F‑IV, 4.3).

Analogously, in the case where the claims are directed to a combination of features, any statement that seems to imply that protection is nevertheless sought not only for the combination as a whole but also for individual features or sub-combinations thereof must be deleted.

Finally, claim-like clauses must also be deleted or amended to avoid claim-like language prior to grant since they otherwise may lead to unclarity on the subject-matter for which protection is sought.

“Claim-like” clauses are clauses present in the description which despite not being identified as a claim, appear as such and usually comprise an independent clause followed by a number of clauses referring to previous clauses. These claim-like clauses are usually found at the end of the description and/or in the form of numbered paragraphs, particularly in divisional or Euro-PCT applications, where the original set of claims from the parent or PCT application is appended to the description.

Question 27

4.5 Essential features

Question 28

4.5.1 Objections arising from missing essential features

Answer 28

The claims, which define the matter for which protection is sought, must be clear, meaning not only that a claim must be comprehensible from a technical point of view, but also that it must define clearly all the essential features of the invention (see T 32/82). Furthermore, the requirement of Art. 84 that the claims be supported by the description applies to features which are explicitly presented in the description as being essential for carrying out the invention (see T 1055/92). A lack of essential features in the independent claim(s) is therefore to be dealt with under the clarity and support requirements.

Question 29

4.5.2 Definition of essential features

Answer 29

Essential features of a claim are those necessary for achieving a technical effect underlying the solution of the technical problem with which the application is concerned (the problem usually being derived from the description). The independent claim(s) must therefore contain all features explicitly described in the description as being necessary to carry out the invention. Any features which, even if consistently mentioned in the context of the invention throughout the application, do not actually contribute to the solution of the problem are not essential features.

As a general rule, the technical effect or result produced by the feature will provide the key to answering the question of whether or not the feature contributes to solving the problem (see also G‑VII, 5.2).

If a claim is to a process for producing the product of the invention, then the process as claimed must be one which, when carried out in a manner which would seem reasonable to a person skilled in the art, necessarily has as its end result that particular product; otherwise there is an internal inconsistency and therefore lack of clarity in the claim.

In particular, where patentability depends on a technical effect, the claims must be so drafted as to include all the technical features of the invention which are essential for the technical effect (see T 32/82).

Claims towards plants or animals which are not exclusively produced by an essentially biological process comprising a functionally defined phenotypic trait and which are worded as product-by-process claims (i.e. obtainable by crossing a plant with a plant grown from deposited seed having accession number XXX and selecting for a progeny plant comprising the phenotypic trait) must fulfil the clarity requirement of Art. 84, as must any other type of claim. In particular, the claimed subject-matter must be defined so that the public is left in no doubt about what the subject-matter for which protection is sought actually is. If the process through which the claimed plant or animal is defined does not impart identifiable and unambiguous technical features to the plant or animal, e.g. the genetic information present in the genome, the claim directed to a plant or animal lacks clarity.

Question 30

4.5.3 Generalisation of essential features

Answer 30

In deciding how specific the essential features must be, the provisions of Art. 83 must be borne in mind: it is sufficient if the application as a whole describes the necessary characteristics of an invention in a degree of detail such that a person skilled in the art can perform the invention (see F‑III, 3). It is not necessary to include all details of the invention in the independent claim. Thus a certain degree of generalisation of the claimed features may be permitted, provided that the claimed generalised features as a whole allow the problem to be solved. In this case a more specific definition of the features is not required. This principle applies equally to structural and functional features.

Question 31

4.5.4 Implicit features

Answer 31

As detailed above, an independent claim must specify explicitly all of the essential features needed to define the invention. This applies except in so far as such features are implied by the generic terms used, e.g. a claim to a “bicycle” does not need to mention the presence of wheels.

In the case of a product claim, if the product is of a well-known kind and the invention lies in modifying it in certain respects, it is sufficient that the claim clearly identifies the product and specifies what is modified and in what way. Similar considerations apply to claims for an apparatus.

Question 32

4.6 Relative terms

Question 33

4.6.1 Clarity objections

Answer 33

Relative or similar terms such as “thin”, “wide” or “strong” constitute a potentially unclear element due to the fact that their meaning may change depending on the context. For these terms to be allowed, their meaning must be clear in the context of the whole disclosure of the application or patent.

However, if a relative or similar term is used by the applicant as the only feature to distinguish the subject-matter of a claim from the prior art, the use of this term is objected to under Art. 84 unless the term has a well-recognised meaning in the particular art, e.g. “high-frequency” in relation to an amplifier, and this is the meaning intended.

Where the relative term has no well-recognised meaning the division invites the applicant to replace it, if possible, by a more precise wording found elsewhere in the disclosure as originally filed. Where there is no basis in the disclosure for a clear definition and the term is no longer the only distinguishing feature, it may be retained in the claim, because excising it would generally lead to an extension of the subject-matter beyond the content of the application as filed – in contravention of Art. 123(2).

Question 34

4.6.2 Interpretation of relative terms

Answer 34

When the use of a relative term is allowed in a claim, this term is interpreted by the division in the least restrictive possible way when determining the extension of the subject-matter of the claim. As a consequence, in many cases, a relative term is not limiting the extension of the subject-matter of a claim.

For example, the expression “a thin metal plate” does not limit the feature “metal plate” against the prior art: a metal plate is “thin” only when compared to another one, but it does not define an objective and measurable thickness. So a metal plate three millimetres thick is thin when compared to a plate five millimetres thick, but thick when compared to a plate one millimetre thick.

As another example, when considering “an element mounted near the end of a truck”, is this element mounted 1 mm from the end of the truck, 10 cm or 2 m? The only limitation of such an expression is that the element must be nearer to the end of the truck than to its middle, i.e. the element can be mounted anywhere in the quarter of the truck next to the end.

Also, unless otherwise clear from the context, the term “elastic” does not limit the type of material, because elasticity is an intrinsic property of any solid material measured by Young’s modulus. In other words, taken outside any context an elastic material can be anything from rubber to diamond.

Question 35

4.7 Terms such as “about”, “approximately” or “substantially”

Question 36

4.7.1 Interpretation of terms such as “about”, “approximately” or “substantially”

Answer 36

Where terms such as “about” or “approximately” are applied to a particular value (e.g. “about 200°C” or “approximately 200°C”) or to a range (e.g. “about x to approximately y”), the value or range is interpreted as being as accurate as the method used to measure it. If no error margins are specified in the application, the same principles described in G‑VI, 8.1 apply, i.e. the expression “about 200°C” is interpreted as having the same round-off as “200°C”. If error margins are specified in the application, they must be used in the claims in place of the expression containing “about” or similar terms.

When terms such as “substantially” or “approximately” qualify a structural unit of an apparatus (e.g. “a tray plate with a substantially circular circumference” or “a tray plate with an approximately curved base”), the expression containing the term “substantially” or “approximately” will be interpreted as a technical feature being produced within the technical tolerance of the method used to manufacture it (e.g. cutting a metal is much more accurate than cutting a plastic; or cutting with a CNC machine is more accurate than cutting by hand) unless the application suggests otherwise. In other words, in the absence of any indication to the contrary in the application, the expression “a tray plate with a substantially circular circumference” is interpreted as claiming the same technical feature as “a tray plate with a circular circumference”; in turn both expressions are considered as claiming any tray whose base the skilled person in the manufacturing field would consider as being circular.

The same applies when the expression containing “substantially” or “approximately” implies that a certain effect or result can be obtained within a certain tolerance and the skilled person knows how to obtain that tolerance. For example, “a substantially vertical seat back” is interpreted as allowing for a certain +/- variation around 90° where the skilled person can recognise that a functionality for supporting the sitting person’s back is present.

Question 37

4.7.2 Clarity objections

Answer 37

If the application suggests that the use of terms such as “about”, “approximately” or “substantially” extends either the interval claimed by a value and/or range outside the error margins of the measurement system or the structural unit beyond the manufacturing tolerances or any other tolerance that the skilled person would take into consideration in the technical field concerned, then the wording of the claims becomes vague and undefined. This leads to an objection under Art. 84 because the presence of this wording prevents the subject-matter of the claims from being unambiguously distinguished from the prior art with respect to novelty and inventive step.

For example, if the application suggests that an icosagon (20-sided polygon) is also a “substantially circular circumference” for a metal tray realised by a CNC waterjet cutting machine, this renders the scope of the claims unclear because:

(i)
the tolerance indicated by the application is outside the tolerance of the manufacturing method (a CNC waterjet cutting machine approximates a circular circumference by using a polygon with hundreds of sides); and

(ii)
if an icosagon is also a “substantially circular circumference”, what about an enneadecagon (19-sided polygon) or an octadecagon (18-sided polygon)? When does a polygon stop being a “substantially circular circumference”? How can this be assessed objectively by the person skilled in the art?

Question 38

4.8 Trade marks

Answer 38

The use of trade marks and similar expressions in claims is not allowed as it does not guarantee that the product or feature referred to is not modified while maintaining its name during the term of the patent. They may be allowed exceptionally if their use is unavoidable and they are generally recognised as having a precise meaning.

With regard to the need to acknowledge trade marks as such in the description, see F‑II, 4.14. With regard to the effect of references to trade marks on sufficiency of disclosure (Art. 83), see F‑III, 7.

Question 39

4.9 Optional features

Answer 39

Optional features, i.e. features preceded by expressions such as “preferably”, “for example”, “such as” or “more particularly” are allowed if they do not introduce ambiguity. In such a case, they are to be regarded as entirely optional.

These expressions introduce ambiguity and render the scope of the claim unclear if they do not lead to a restriction of the subject-matter of the claim.

For example, the wording “a method to manufacture an artificial stone, such as a clay brick” does not fulfil the requirements of Art. 84, because a clay brick will never be an artificial stone. Hence it is unclear if either an artificial stone or a clay brick is manufactured by the method of the claim.

Analogously, the wording “the solution is heated up to between 65 and 85°C, particularly to 90°C” does not fulfil the requirements of Art. 84 because the temperature after the term “particularly” contradicts the range before it.

Question 40

4.10 Result to be achieved

Answer 40

The area defined by the claims must be as precise as the invention allows. As a general rule, claims which attempt to define the invention by a result to be achieved are not allowed, in particular if they only amount to claiming the underlying technical problem. However, they may be allowed if the invention either can only be defined in such terms or cannot otherwise be defined more precisely without unduly restricting the scope of the claims and if the result is one which can be directly and positively verified by tests or procedures adequately specified in the description or known to the person skilled in the art and which do not require undue experimentation (see T 68/85). For example, the invention may relate to an ashtray in which a smouldering cigarette end will be automatically extinguished due to the shape and relative dimensions of the ashtray. The latter may vary considerably in a manner difficult to define whilst still providing the desired effect. So long as the claim specifies the construction and shape of the ashtray as clearly as possible, it may define the relative dimensions by reference to the result to be achieved, provided that the specification includes adequate directions to enable the skilled person to determine the required dimensions by routine test procedures (see F‑III, 1 to F‑III, 3).

However, these cases have to be distinguished from those in which the product is defined by the result to be achieved and the result amounts in essence to the problem underlying the application. It is established case law that an independent claim must indicate all the essential features of the object of the invention in order to comply with the requirements of Art. 84 (see G 2/88 and G 1/04). Art. 84 also reflects the general legal principle that the extent of monopoly conferred by a patent, as defined in the claims, must correspond to the technical contribution to the art. It must not extend to subject-matter which, after reading the description, would still not be at the disposal of the person skilled in the art (T 409/91). The technical contribution of a patent resides in the combination of features which solve the problem underlying the application. Therefore, if the independent claim defines the product by a result to be achieved and the result amounts in essence to the problem underlying the application, that claim must state the essential features necessary to achieve the result claimed (T 809/12), see also F‑IV, 4.5.

The above-mentioned requirements for allowing a definition of subject-matter in terms of a result to be achieved differ from those for allowing a definition of subject-matter in terms of functional features (see F‑IV, 4.22 and F‑IV, 6.5).

Question 41

4.11 Parameters

Answer 41

Parameters are characteristic values, which may be values of directly measurable properties (e.g. the melting point of a substance, the flexural strength of a steel, the resistance of an electrical conductor) or may be defined as more or less complicated mathematical combinations of several variables in the form of formulae.

The characteristics of a product may be specified by parameters related to the physical structure of the product, provided that those parameters can be clearly and reliably determined by objective procedures which are usual in the art. Where the characteristics of the product are defined by a mathematical relation between parameters, each parameter needs to be clearly and reliably determined.

The same applies to process-related features defined by parameters.

The requirements of Art. 84 with regard to the characterisation of a product by parameters can be summarised as follows (see T 849/11):

(i)
the claims must be clear in themselves when read by the skilled person (not including knowledge derived from the description);

(ii)
the method for measuring a parameter (or at least a reference thereto) must appear completely in the claim itself; and

(iii)
an applicant who chooses to define the scope of the claim by parameters needs to ensure that the skilled person can easily and unambiguously verify whether they are working inside or outside the scope of the claim.

If the description of the method for measuring a parameter is so long that its inclusion makes the claim unclear through lack of conciseness or difficult to understand, the requirement under point (ii) can be met by including in the claim a reference to the description, in accordance with Rule 43(6).

Furthermore the requirement under point (ii) can still be met if it can be convincingly shown that (see T 849/11):

(a)
the measurement method to be employed belongs to the skilled person’s common general knowledge, e.g. because there is only one method, or because a particular method is commonly used; or

(b)
all the measurement methodologies known in the relevant technical field for determining this parameter yield the same result within the appropriate limit of measurement accuracy.

For further issues relating to lack of support and sufficiency of disclosure regarding parameters, see F‑III, 11 and F‑IV, 6.4.

Question 42

4.11.1 Unusual parameters

Answer 42

Unusual parameters are parameters not commonly used in the field of the invention. Two main situations can present themselves:

(i)
The unusual parameter measures a property of the product/process for which another generally recognised parameter is used in the field of the invention.

(ii)
The unusual parameter measures a property of the product/process that was not measured before in the field of the invention.

In addition to the requirements contained in F‑IV, 4.11:

–
Cases in which an unusual parameter of type (i) is employed and no straightforward conversion from the unusual parameter to the parameter generally recognised in the art is possible, or a non-accessible apparatus for measuring the unusual parameter is used are prima facie objectionable on grounds of lack of clarity, as no meaningful comparison with the prior art can be made. Such cases might also disguise lack of novelty (see G‑VI, 6).

–
Use of unusual parameters of type (ii) is allowable if it is evident from the application that the skilled person would face no difficulty in carrying out the presented tests and would thereby be able to establish the exact meaning of the parameter and to make a meaningful comparison with the prior art. In addition, the onus of proof that an unusual parameter is a genuine distinctive feature vis-à-vis the prior art lies with the applicant. No benefit of doubt can be accorded in this respect (see G‑VI, 6).

Example of an allowable unusual parameter of type (ii)

The application explains that the abrasive action of sandpaper of very fine grade is improved if strips with abrasive grain are alternated with strips without abrasive grain. Claim 1 contains an unusual parameter of type (ii) that measures the relationship between the widths of the abrasive strips and the non-abrasive strips within a certain length of the sandpaper.

The skilled person has no problem in establishing the exact meaning of the parameter, measuring it and determining its genuine distinctive feature against the prior art.

Question 43

4.12 Product-by-process claim

Answer 43

A claim defining a product in terms of a process is to be construed as a claim to the product as such. The technical content of the invention lies not in the process per se, but rather in the technical properties imparted to the product by the process. Claims defining plants or animals produced by a method including a technical step which imparts a technical feature to a product constitute an exception in so far as the requirements of Art. 53(b) as interpreted by Rule 28(2) are concerned. The exclusion under Rule 28(2) regarding plants and animals exclusively obtained by means of an essentially biological process does not apply to patents granted before 1 July 2017 nor to pending patent applications with a filing date and/or a priority date before 1 July 2017 (see G 3/19, OJ EPO 2020, A119).

If a technical feature of a claimed plant or animal, e.g. a single nucleotide exchange in the genome, can be the result of both a technical intervention (e.g. directed mutagenesis) and an essentially biological process (a natural allele), a disclaimer is necessary to delimit the claimed subject-matter to the technically produced product (see examples in G‑II, 5.4.2.1 and G‑II, 5.4). If, on the other hand, the feature in question can unambiguously be obtained by technical intervention only, e.g. a transgene, no disclaimer is necessary. For the general principles governing disclaimers see H‑V, 4.1 and H‑V, 4.2.

If the process through which the claimed plant or animal is defined does not impart identifiable and unambiguous technical features to the plant or animal, e.g. the genetic information present in the genome, the claim directed to a plant or animal lacks clarity.

Claims for products defined in terms of a process of manufacture are allowable only if the products as such fulfil the requirements for patentability, i.e. inter alia that they are new and inventive, and it is impossible to define the claimed product other than in terms of a process of manufacture. A product is not rendered novel merely by the fact that it is produced by means of a new process. The claim may for instance take the form “Product X obtainable by process Y”. Irrespective of whether the term “obtainable”, “obtained”, “directly obtained” or an equivalent wording is used in the product-by-process claim, it is still directed to the product per se and confers absolute protection upon the product.

As regards novelty, when a product is defined by its method of manufacture, the question to be answered is whether the product under consideration is identical to known products. The burden of proof for an allegedly distinguishing “product-by-process” feature lies with the applicant, who has to provide evidence that the modification of the process parameters results in another product, for example by showing that distinct differences exist in the properties of the products. Nevertheless, the division needs to furnish reasoned argumentation to support the alleged lack of novelty of a product-by-process claim, especially if this objection is contested by the applicant (see G 1/98, T 828/08).

Art. 53(b)
Rule 28(2)
Art. 64(2)

Similarly, examination of product or product-by-process claims in respect of their patentability under the EPC is unaffected by the extent of the protection conferred by the patent or the patent application (see G 2/12 and G 2/13, Reasons VIII(2)(6)(b)).

Question 44

4.12.1 Product claim with process features

Answer 44

Provided that they are allowable, the process features in a product claim comprising both product features and process features can establish the novelty of the claimed product only if they cause the claimed product to have different properties from the products known from the prior art. As in the case of product-by-process claims (see F‑IV, 4.12), the burden of proof for an allegedly distinguishing “product-by-process” feature lies with the applicant.

Question 45

4.13 Interpretation of expressions stating a purpose

Question 46

4.13.1 Interpretation of expressions such as “Apparatus for …”, “Product for … “

Answer 46

If a claim commences with such words as “Apparatus for carrying out the process …”, this must be construed as meaning merely apparatus suitable for carrying out the process. An apparatus which otherwise possesses all of the features specified in the claims but which is unsuitable for the stated purpose or requires modifications to enable it to be so used for said purpose, is normally not considered as anticipating the claim.

Similar considerations apply to a claim for a product for a particular use. For example, if a claim refers to a “mould for molten steel”, this implies certain limitations for the mould. Therefore, a plastic ice cube tray with a melting point much lower than that of steel does not come within the claim. Similarly, a claim to a substance or composition for a particular use is construed as meaning a substance or composition which is in fact suitable for the stated use; a known product which prima facie is the same as the substance or composition defined in the claim, but which is in a form which renders it unsuitable for the stated use, does not deprive the claim of novelty. However, if the known product is in a form in which it is in fact suitable for the stated use, though it has never been described for that use, it deprives the claim of novelty.

An exception to this general principle of interpretation is where the claim is to a known substance or composition for use in a surgical, therapeutic or diagnostic method (see G‑II, 4.2 and G‑VI, 7.1).

Question 47

4.13.2 Interpretation of means-plus-function features (“means for … “)

Answer 47

Means-plus-function features (“means for …”) are a type of functional feature and hence do not contravene the requirements of Art. 84.

Any prior art feature suitable for carrying out the function of a means-plus-function feature will anticipate the latter. For example, the feature “means for opening a door” is anticipated by both the door key and a crowbar.

An exception to this general principle of interpretation is where the function of the means-plus-function feature is carried out by a computer or similar apparatus. In this case the means-plus-function features are interpreted as means adapted to carry out the relevant steps/functions, rather than merely means suitable for carrying them out.

Example:

“1.
An eyeglass lens grinding machine for processing a lens such that the lens is fitted in an eyeglass frame, said machine comprising:

at least a grinding wheel for bevelling the lens;

means for receiving frame configurational data on the eyeglass frame and layout data to be used in providing a layout of the lens relative to the eyeglass frame;

means for detecting an edge position of the lens on the basis of the received frame data and layout data;

means for determining a first bevel path by calculation based on the result of detection by said edge position detecting means;

means for determining a second bevel path obtained by tilting said first bevel path such that said second bevel path passes through a desired position on a lens edge; and

means for controlling the grinding wheel during the bevelling of the lens on the basis of said second bevel path.”

“1.
An eyeglass lens grinding machine for processing a lens such that the lens is fitted in an eyeglass frame, said machine comprising

at least a grinding wheel for bevelling the lens;

a computer adapted to:

–
receive frame configurational data on the eyeglass frame and layout data to be used in providing a layout of the lens relative to the eyeglass frame;

–
detect an edge position of the lens on the basis of the received frame data and layout data;

–
determine a first bevel path by calculation based on the result of detection by said edge position detecting means;

–
determine a second bevel path that is obtained by tilting said first bevel path such that said second bevel path passes through a desired position on a lens edge; and

–
control the grinding wheel during the bevelling of the lens on the basis of said second bevel path.”

Each of these two claims is new over a prior art disclosing an eyeglass lens grinding machine comprising a grinding wheel and a computer for controlling the grinding wheel if the specific processing steps are not disclosed in the prior art. When “means for” refers to computer means, the processing steps being defined as “means for + function” (first claim) and “computer adapted to + function” (second claim) are to be interpreted as limiting. Therefore, a prior-art document disclosing an eyeglass lens grinding machine comprising at least a grinding wheel for bevelling the lens and a computer only anticipates these claims if the prior-art document also discloses that the computer is programmed to carry out the claimed steps.

For further information on claim formulations commonly used in computer-implemented inventions, see F‑IV, 3.9.

Question 48

4.13.3 Interpretation of expressions such as “Method for …”

Answer 48

In the context of a method, two different types of stated purpose are possible, namely those that define the application or use of a method, and those that define an effect arising from the steps of the method and are implicit therein (see T 1931/14).

Where the stated purpose defines the specific application of the method, this purpose requires additional steps which are not implied by or inherent in the other remaining steps defined in the claim, and without which the claimed process would not achieve the stated purpose. Hence a method claim that defines a working method which, for example, commences with such words as “Method for remelting galvanic layers”, the part “for remelting …” is not to be understood as meaning that the process is merely suitable for remelting galvanic layers, but rather as a functional feature concerning the remelting of galvanic layers and, hence, defining one of the method steps of the claimed working method (see T 1931/14 and T 848/93).

Analogously, in the case of a “method of manufacture”, i.e. a claim directed to a method for manufacturing a product, the fact that the method results in the product is to be treated as an integral method step (see T 268/13).

On the other hand, where the purpose merely states a technical effect which inevitably arises when carrying out the other remaining steps of the claimed method and is thus inherent in those steps, this technical effect has no limiting effect on the subject-matter of the claim. For example, a method claim concerning the application of a particular surface active agent to a specified absorbent product and defining its purpose as “for reducing malodor” in terms of an intended technical effect is anticipated by a prior-art document describing a method having such suitability “for reducing malodor” although not mentioning the specific use (see T 1931/14 and T 304/08).

Question 49

4.14 Definition by reference to (use with) another entity

Answer 49

A claim in respect of a physical entity (product, apparatus) may seek to define the invention by reference to features relating to another entity that is not part of the claimed first entity but that is related to it through use. An example of such a claim is “a cylinder head for an engine”, where the former is defined by features of its location in the latter.

Since the first entity (the cylinder head) can often be produced and marketed independently of the other entity (the engine), the applicant is normally entitled to independent protection of the first entity per se. Therefore, in first instance, such a claim is always interpreted as not including the other entity or its features: these limit the subject-matter of the claim only in so far as the first entity’s features are suitable to be used with the second entity’s features. In the above example, the cylinder head must be suitable to be mounted in the engine described in the claim, but the features of the engine do not limit the subject-matter of the claim per se.

Only if the claim is directed without any doubt to a combination of the first and second entities, the features of the other entity are limiting for the subject-matter of the claim. In the above example, the claim should be written as an “engine with a cylinder head” or an “engine comprising a cylinder head” for the features of the engine to be considered as limiting the subject-matter of the claim.

For the assessment of claims directed to computer-implemented inventions, where a claim to a computer program refers to a computer (a separate entity), see F‑IV, 3.9.

Question 50

4.14.1 Clarity objections

Answer 50

Once it has been established if a claim is directed to either one entity or to a combination of entities, the wording of the claim must be adapted appropriately to reflect it; otherwise the claim is objected to under Art. 84.

For example, in the case of a claim directed to a single entity, the first entity is “connectable” to the second entity; in the case of a claim directed to a combination of entities the first entity is “connected” to the second entity.

Question 51

4.14.2 Dimensions and/or shape defined by reference to another entity

Answer 51

It may be allowable to define the dimensions and/or shape of a first entity in an independent claim by general reference to the dimensions and/or corresponding shape of a second entity which is not part of the claimed first entity but is related to it through use. This particularly applies where the size of the second entity is in some way standardised (for example, in the case of a mounting bracket for a vehicle number-plate, where the bracket frame and fixing elements are defined in relation to the outer shape of the number-plate).

Furthermore, references to second entities which cannot be seen as subject to standardisation may also be sufficiently clear in cases where the skilled person would have little difficulty in inferring the resultant restriction of the scope of protection for the first entity (for example, in the case of a covering sheet for an agricultural round bale, where the length and breadth of the covering sheet and how it is folded are defined by reference to the bale’s circumference, width and diameter, see T 455/92). It is neither necessary for such claims to contain the exact dimensions of the second entity, nor do they have to refer to a combination of the first and second entities. Specifying the length, width and/or height of the first entity without reference to the second would lead to an unwarranted restriction of the scope of protection.

Question 52

4.15 The expression “in”

Answer 52

To avoid ambiguity, particular care is exercised when assessing claims which employ the word “in” to define a relationship between different physical entities (product, apparatus), or between entities and activities (process, use), or between different activities. Examples of claims worded in this way include the following:

(i)
Cylinder head in a four-stroke engine;

(ii)
In a telephone apparatus with an automatic dialler, dial tone detector and feature controller, the dial tone detector comprising …;

(iii)
In a process using an electrode feeding means of an arc-welding apparatus, a method for controlling the arc welding current and voltage comprising the following steps: …; and

(iv)
In a process/system/apparatus etc. … the improvement consisting of…

In examples (i) to (iii) the emphasis is on the fully functioning sub-units (cylinder head, dial tone detector, method for controlling the arc welding current and voltage) rather than the complete unit within which the sub-unit is contained (four-stroke engine, telephone, process). This can make it unclear whether the protection sought is limited to the sub-unit per se, or whether the unit as a whole is to be protected. For the sake of clarity, claims of this kind must be directed either to “a unit with (or comprising) a sub-unit” (e.g. “four-stroke engine with a cylinder head”), or to the sub-unit per se, specifying its purpose (for example, “cylinder head for a four-stroke engine”). The latter course may be followed only at the applicant’s express wish and only if there is a basis for it in the application as filed, in accordance with Art. 123(2).

With claims of the type indicated by example (iv), the use of the word “in” sometimes makes it unclear whether protection is sought for the improvement only or for all the features defined in the claim. Here, too, it is essential to ensure that the wording is clear.

However, claims such as “use of a substance … as an anticorrosive ingredient in a paint or lacquer composition” are acceptable on the basis of second non-medical use (see G‑VI, 7.2, second paragraph).

Question 53

4.16 Use claims

Answer 53

For the purposes of examination, a “use” claim in a form such as “the use of substance X as an insecticide” is regarded as equivalent to a “process” claim of the form “a process of killing insects using substance X”. Thus, a claim in the form indicated is not to be interpreted as directed to the substance X recognisable (e.g. by further additives) as intended for use as an insecticide. Similarly, a claim for “the use of a transistor in an amplifying circuit” is equivalent to a process claim for the process of amplifying using a circuit containing the transistor and is not to be interpreted as being directed to “an amplifying circuit in which the transistor is used”, nor to “the process of using the transistor in building such a circuit”. However, a claim directed to the use of a process for a particular purpose is equivalent to a claim directed to that very same process (see T 684/02).

Care is to be taken when a claim relates to a two-step process which combines a use step with a product production step. This may be the case e.g. when a polypeptide and its use in a screening method have been defined as the only contribution to the art. An example of such a claim would then be:

“A method comprising:

(a)
contacting polypeptide X with a compound to be screened and

(b)
determining whether the compound affects the activity of said polypeptide, and subsequently transforming any active compound into a pharmaceutical composition.”

Many variations of such a claim are conceivable, but in essence they combine (a) a screening step (i.e. using a specified test material to select a compound having a given property) with (b) further production steps (i.e. further transforming the selected compound for instance into the desired composition).

According to decision G 2/88 there are two different types of process claim, (i) the use of an entity to achieve a technical effect and (ii) a process for the production of a product. G 2/88 makes clear that Art. 64(2) applies only to processes of type (ii). The above claim and its analogues thus represent a combination of two different and irreconcilable types of process claim. Step (a) of the claim relates to a process of type (i), step (b) to a process of type (ii). Step (b) builds on the “effect” achieved by step (a), rather than step (a) feeding into step (b) a specific starting material and resulting in a specific product. Thus, the claim is made up partly of a use claim and partly of a process for producing a product. This renders the claim unclear according to Art. 84.

Question 54

4.17 References to the description or drawings

Answer 54

As indicated in Rule 43(6), the claims must not, in respect of the technical features of the invention, rely on references to the description or drawings “except where absolutely necessary”. In particular they must not normally rely on such references as “as described in part … of the description”, or “as illustrated in Figure 2 of the drawings”.

The emphatic wording of the excepting clause is to be noted. The onus is upon the applicant to show that it is “absolutely necessary” to rely on reference to the description or drawings in appropriate cases (see T 150/82).

An example of an allowable exception is an invention involving some peculiar shape, illustrated in the drawings, but which cannot be readily defined either in words or by a simple mathematical formula. Another special case is that in which the invention relates to chemical products some of whose features can be defined only by means of graphs or diagrams.

Question 55

4.18 Reference signs

Answer 55

If the application contains drawings, and the comprehension of the claims is improved by establishing the connection between the features mentioned in the claims and the corresponding reference signs in the drawings, then appropriate reference signs need to be placed in parentheses after the features mentioned in the claims. If there are a large number of different embodiments, only the reference signs of the most important embodiments need be incorporated in the independent claim(s). Where claims are drafted in the two-part form set out in Rule 43(1), the reference signs need to be inserted not only in the characterising part but also in the preamble of the claims.

Reference signs are not however to be construed as limiting the extent of the matter protected by the claims; their sole function is to make claims easier to understand. A comment to that effect in the description is acceptable (see T 237/84).

If text is added to reference signs in parentheses in the claims, lack of clarity can arise (Art. 84). Expressions such as “securing means (screw 13, nail 14)” or “valve assembly (valve seat 23, valve element 27, valve seat 28)” are not reference signs within the meaning of Rule 43(7) but are special features, to which the last sentence of Rule 43(7) is not applicable. Consequently, it is unclear whether the features added to the reference signs are limiting or not. Accordingly, such bracketed features are generally not permissible. However, additional references to those figures where particular reference signs are to be found, such as “(13 – Figure 3; 14 – Figure 4)” are unobjectionable.

A lack of clarity can also arise with bracketed expressions that do not include reference signs, e.g. the expression “(concrete) moulded brick” is unclear because it cannot be determined if the feature moulded brick is limited or not by the word concrete. In contrast, bracketed expressions with a generally accepted meaning are allowable, e.g. “(meth)acrylate” which is known as an abbreviation for “acrylate and methacrylate”. The use of brackets in chemical or mathematical formulae is also unobjectionable, as is their use when correcting physical values not complying with the requirements as determined by the President under Rule 49(2).

Question 56

4.19 Negative limitations (e.g. disclaimers)

Answer 56

A claim’s subject-matter is normally defined in terms of positive features indicating that certain technical elements are present. Exceptionally, however, the subject-matter may be restricted using a negative limitation expressly stating that particular features are absent. This may be done e.g. if the absence of a feature can be deduced from the application as filed (see T 278/88).

Negative limitations such as disclaimers may be used only if adding positive features to the claim either would not define more clearly and concisely the subject-matter still protectable (see G 1/03 and T 4/80) or would unduly limit the scope of the claim (see T 1050/93). It has to be clear what is excluded by means of the disclaimer (see T 286/06). A claim containing one or more disclaimers must also fully comply with the clarity and conciseness requirements of Art. 84 (see G 1/03, Reasons 3). Moreover, in the interests of the patent’s transparency, the excluded prior art needs to be indicated in the description in accordance with Rule 42(1)(b), and the relation between the prior art and the disclaimer needs to be shown.

For the allowability of disclaimers excluding embodiments that were disclosed in the original application as being part of the invention, see H‑V, 4.2.2. With respect to the allowability of disclaimers not disclosed in the application as originally filed (so-called undisclosed disclaimers), see H‑V, 4.2.1.

Question 57

4.20 “Comprising” vs. “consisting of”

Answer 57

This section outlines how the terms “comprising” and “consisting of” are to be interpreted when construing a claim.

A claim directed to an apparatus/method/product “comprising” certain features is interpreted as meaning that it includes those features, but that it does not exclude the presence of other features, as long as they do not render the claim unworkable.

On the other hand, if the wording “consist of” is used, then no further features are present in the apparatus/method/product apart from the ones following said wording. In particular, if a claim for a chemical compound refers to it as “consisting of components A, B and C” by their proportions expressed in percentages, the presence of any additional component is excluded and therefore the percentages must add up to 100% (see T 711/90).

In the case of chemical compounds or compositions, the use of “consisting essentially of” or “comprising substantially” means that specific further components can be present, namely those not materially affecting the essential characteristics of the compound or composition. For any other apparatus/method/product these terms have the same meaning as “comprising”.

Regarding Art. 123(2), “comprising” does not provide per se an implicit basis for either “consisting of” or “consisting essentially of” (T 759/10).

Question 58

4.21 Functional definition of a pathological condition

Answer 58

When a claim is directed to a further therapeutic application of a medicament and the condition to be treated is defined in functional terms, e.g. “any condition susceptible of being improved or prevented by selective occupation of a specific receptor”, the claim can be regarded as clear only if instructions, in the form of experimental tests or testable criteria, are available from the patent documents or from the common general knowledge allowing the skilled person to recognise which conditions fall within the functional definition and accordingly within the scope of the claim (see T 241/95; see also G‑II, 4.2).

Question 59

4.22 Broad claims

Answer 59

The Convention does not explicitly mention overly broad claims. However, objections to such claims may arise for various reasons.

Where there are discrepancies between the claims and the description, the claims are not sufficiently supported by the description (Art. 84) and also, in most cases, the invention is not sufficiently disclosed (Art. 83) (see T 409/91, F‑IV, 6.1 and F‑IV, 6.4).

Art. 84 and Art. 83

Sometimes an objection of lack of novelty arises, for example if the claim is formulated in such broad terms that it also covers known subject-matter from other technical fields. Broad claims may also cover embodiments for which a purported effect has not been achieved. On raising an objection of lack of inventive step in such cases, see G‑VII, 5.2.

For broad claims in opposition proceedings, see also D‑V, 4 and 5.

Question 60

4.23 Order of claims

Answer 60

There is no legal requirement that the first claim must be the broadest. However, Art. 84 requires that the claims must be clear not only individually but also as a whole. Therefore, where there are a large number of claims, they need to be arranged with the broadest claim first. If the broadest of a large number of claims is a long way down, so that it could easily be overlooked, the applicant is required either to rearrange the claims in a more logical way or to direct attention to the broadest claim in the introductory part or in the summary of the description.

Furthermore, if the broadest claim is not the first one, the later broader claim must also be an independent claim. Consequently, where these independent claims are of the same category, an objection may also arise under Rule 43(2) (see F‑IV, 3.2 and 3.3).

Question 61

4.24 Interpretation of terms such as identity and similarity in relation to amino or nucleic acid sequences

Answer 61

Amino acid or nucleic acid sequences can be defined by a percentage of identity. The percentage of identity determines the number of identical residues over a defined length in a given alignment. If no algorithm or calculation method for determining the percentage of identity is defined, the broadest interpretation will be applied using any reasonable algorithm or calculation method known at the relevant filing date.

Amino acid sequences can be defined by a degree of similarity (expressed as a percentage of similarity). The term similarity is broader than the term identity because it allows conservative substitutions of amino acid residues having similar physicochemical properties over a defined length of a given alignment. The percentage of similarity is determinable only if a similarity-scoring matrix is defined. If no similarity-scoring matrix is defined, a claim referring to a sequence displaying a percentage of similarity to a recited sequence is considered to cover any sequence fulfilling the similarity requirement as determined with any reasonable similarity-scoring matrix known at the relevant filing date.

For amino acid sequences, if a percentage of homology is used by the applicant as the only feature to distinguish the subject-matter of a claim from the prior art, its use is objected to under Art. 84 (cf. F‑IV, 4.6.1) unless the determination or calculation of the percentage of homology is clearly defined in the application as filed. For nucleic acid sequences, homology percentage and identity percentage are usually considered to have the same meaning.

Question 62

5. Conciseness, number of claims

Answer 62

The requirement that the claims must be concise refers to the claims in their entirety as well as to the individual claims. The number of claims must be considered in relation to the nature of the invention the applicant seeks to protect. Undue repetition of wording, e.g. between one claim and another, is to be avoided by the use of the dependent form. Regarding independent claims in the same category, see F‑IV, 3.2 and 3.3. The conciseness requirement also applies to dependent claims in respect of both their number and their content. For example, the repetition of subject-matter that has already been claimed is unnecessary and negatively affects the conciseness of the claims. Similarly, the number of dependent claims should be reasonable. What is or what is not a reasonable number of claims depends on the facts and circumstances of each particular case. The interests of the relevant public must also be borne in mind. The presentation of the claims must not make it unduly burdensome to determine the matter for which protection is sought (T 79/91 and T 246/91). Objection may also arise where there is a multiplicity of alternatives within a single claim, if this renders it unduly burdensome to determine the matter for which protection is sought.

Where it is found that the claims lack conciseness under Art. 84, this may lead to the issuing of a partial European or partial supplementary European search report under Rule 63 (see B‑VIII, 3.1 and 3.2). In such cases, in the absence of appropriate amendment and/or convincing arguments from the applicant as to why the invitation under Rule 63(1) was not justified, an objection under Rule 63(3) will also arise (see H‑II, 5).

Question 63

6. Support in description

Question 64

6.1 General remarks

Answer 64

The claims must be supported by the description. This means that there must be a basis in the description for the subject-matter of every claim and that the scope of the claims must not be broader than is justified by the extent of the description and drawings and also the contribution to the art (see T 409/91). Regarding the support of dependent claims by the description, see F‑IV, 6.6.

Question 65

6.2 Extent of generalisation

Answer 65

Most claims are generalisations from one or more particular examples. The extent of generalisation permissible is a matter which the division must judge in each particular case in the light of the relevant prior art. Thus an invention which opens up a whole new field is entitled to more generality in the claims than one which is concerned with advances in a known technology. A fair statement of claim is one which is not so broad that it goes beyond the invention nor yet so narrow as to deprive the applicant of a just reward for the disclosure of his invention. The applicants are allowed to cover all obvious modifications of, equivalents to and uses of that which they have described. In particular, if it is reasonable to predict that all the variants covered by the claims have the properties or uses the applicants ascribe to them in the description, they are allowed to draw the claims accordingly. After the date of filing, however, the applicants are allowed to do so only if this does not contravene Art. 123(2).

Question 66

6.3 Objection of lack of support

Answer 66

As a general rule, a claim is regarded as supported by the description unless there are well-founded reasons for believing that the skilled person would be unable, on the basis of the information given in the application as filed, to extend the particular teaching of the description to the whole of the field claimed by using routine methods of experimentation or analysis. Support must, however, be of a technical character; vague statements or assertions having no technical content provide no basis.

The division raises an objection of lack of support only if it has well-founded reasons. Once the division has set out a reasoned case that, for example, a broad claim is not supported over the whole of its breadth, the onus of demonstrating that the claim is fully supported lies with the applicant (see F‑IV, 4). Where an objection is raised, the reasons are, where possible, to be supported specifically by a published document.

A claim in generic form, i.e. relating to a whole class, e.g. of materials or machines, may be acceptable even if of broad scope, if there is fair support in the description and there is no reason to suppose that the invention cannot be worked through the whole of the field claimed. Where the information given appears insufficient to enable a person skilled in the art to extend the teaching of the description to parts of the field claimed but not explicitly described by using routine methods of experimentation or analysis, the division raises a reasoned objection, and invites the applicant to establish, by suitable response, that the invention can in fact be readily applied on the basis of the information given over the whole field claimed or, failing this, to restrict the claim accordingly.

The question of support is illustrated by the following examples:

(i)
a claim relates to a process for treating all kinds of “plant seedlings” by subjecting them to a controlled cold shock so as to produce specified results, whereas the description discloses the process applied to one kind of plant only. Since it is well-known that plants vary widely in their properties, there are well-founded reasons for believing that the process is not applicable to all plant seedlings. Unless the applicants can provide convincing evidence that the process is nevertheless generally applicable, they must restrict their claim to the particular kind of plant referred to in the description. A mere assertion that the process is applicable to all plant seedlings is not sufficient;

(ii)
a claim relates to a specified method of treating “synthetic resin mouldings” to obtain certain changes in physical characteristics. All the examples described relate to thermoplastic resins and the method is such as to appear inappropriate to thermosetting resins. Unless the applicants can provide evidence that the method is nevertheless applicable to thermosetting resins, they must restrict their claim to thermoplastic resins;

(iii)
a claim relates to improved fuel oil compositions which have a given desired property. The description provides support for one way of obtaining fuel oils having this property, which is by the presence of defined amounts of a certain additive. No other ways of obtaining fuel oils having the desired property are disclosed. The claim makes no mention of the additive. The claim is not supported over the whole of its breadth and objection arises.

Where it is found that the claims lack support in the description under Art. 84, this may lead to the issuing of a partial European or supplementary European search report under Rule 63 (see B‑VIII, 3.1 and 3.2). In such cases, in the absence of appropriate amendment and/or convincing arguments provided by the applicant in his response to the invitation under Rule 63(1) (see B‑VIII, 3.2) or to the search opinion under Rule 70a (see B‑XI, 8), an objection under Rule 63(3) will also arise (see H‑II, 5).

Question 67

6.4 Lack of support vs. insufficient disclosure

Answer 67

Although an objection of lack of support is an objection under Art. 84, it can often, as in the above examples, also be considered as an objection of insufficient disclosure of the invention under Art. 83 (see F‑III, 1 to 3), the objection being that the disclosure is insufficient to enable the skilled person to carry out the “invention” over the whole of the broad field claimed (although sufficient in respect of a narrow “invention”). Both requirements are designed to reflect the principle that the terms of a claim must be commensurate with, or be justified by, the invention’s technical contribution to the art. Therefore, the extent to which an invention is sufficiently disclosed is also highly relevant to the issue of support. The reasons for failure to meet the requirements of Art. 83 may in effect be the same as those that lead to the infringement of Art. 84 as well, namely that the invention, over the whole range claimed, extends to technical subject-matter not made available to the person skilled in the art by the application as filed (see T 409/91, Reasons 2 and 3.3 to 3.5).

For example, where a technical feature is described and highlighted in the description as being an essential feature of the invention, to comply with Art. 84 this feature must also be part of the independent claim(s) defining the invention (see F‑IV, 4.5.1). By the same token, if the (essential) technical feature in question is absent from the claims, and no information is given on how to perform the claimed invention successfully without the use of said feature, the description does not disclose the invention defined in the claim(s) in the manner prescribed by Art. 83.

An objection under both Art. 84 and Art. 83 may also be justified. An example would be a claim relating to a known class of chemical compounds defined by measurable parameters, when the description does not disclose a technical teaching allowing the skilled person to manufacture those compounds complying with the parametric definition, and this is not otherwise feasible by the application of common general knowledge or routine experimentation. Such a claim would be both technically not supported and not sufficiently disclosed, regardless of whether the parametric definition meets the clarity requirement of Art. 84.

Whether the objection is raised as lack of support or as insufficiency is not important in examination proceedings; but it is important in opposition proceedings since there only the latter ground is available (see D‑III, 5).

Question 68

6.5 Definition in terms of function

Answer 68

A claim may broadly define a feature in terms of its function, i.e. as a functional feature, even where only one example of the feature has been given in the description, if the skilled person would appreciate that other means could be used for the same function (see also F‑IV, 2.1 and 4.10). For example, “terminal position detecting means” in a claim might be supported by a single example comprising a limit switch, it being evident to the skilled person that e.g. a photoelectric cell or a strain gauge could be used instead. In general, however, if the entire contents of the application are such as to convey the impression that a function is to be carried out in a particular way, with no intimation that alternative means are envisaged, and a claim is formulated in such a way as to embrace other means, or all means, of performing the function, then objection arises. Furthermore, it may not be sufficient if the description merely states in vague terms that other means may be adopted, if it is not reasonably clear what they might be or how they might be used.

Question 69

6.6 Support for dependent claims

Answer 69

Where certain subject-matter is clearly disclosed in a claim of the application as filed, but is not mentioned anywhere in the description, it is permissible to amend the description so that it includes this subject-matter. Where the claim is dependent, it may suffice if it is mentioned in the description that the claim sets out a particular embodiment of the invention (see F‑II, 4.5).